Exhibit 10.10
FORM OF TRANSITIONAL TRADEMARK LICENSE AGREEMENT(1)
THIS TRANSITIONAL TRADEMARK LICENSE AGREEMENT (this "AGREEMENT") is by and
between THE ST. XXXX COMPANIES, INC., a Minnesota corporation ("ST. XXXX"), and
PLATINUM UNDERWRITERS HOLDINGS, LTD., a Bermuda corporation ("PLATINUM").
WHEREAS St. Xxxx, directly or through one or more of its subsidiaries,
exclusively owns all rights, title and interest in and to the St. Xxxx
trademarks and service marks identified on SCHEDULE A attached hereto
(collectively, the "LICENSED MARKS"), as well as the goodwill associated
therewith and symbolized thereby;
WHEREAS St. Xxxx, Platinum and certain other parties have entered into that
certain Formation and Separation Agreement dated as of ________, 2002 (the
"FORMATION AND SEPARATION AGREEMENT"), pursuant to Section 3.01(e) of which St.
Xxxx and Platinum have agreed to enter into this Agreement; and
WHEREAS St. Xxxx desires to grant to Platinum and Platinum desires to
receive the right to use the Licensed Marks pursuant to the terms of this
Agreement.
NOW THEREFORE, in furtherance of the transactions contemplated in the
Formation and Separation Agreement and in consideration of the promises and the
mutual covenants and agreements contained therein and herein, and for other good
and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereto agree as follows:
ARTICLE I
GRANT OF LICENSE
SECTION 1.1 LICENSE. Subject to the terms of this Agreement, St. Xxxx
hereby grants to Platinum a royalty-free, limited, non-sublicensable (subject to
Section 6.2), non-transferable (subject to Section 6.1) license to use the
Licensed Marks throughout the world in connection with the conduct of Platinum's
business as described in Platinum's registration statement filed on Form S-1
(File No. 333-86906) (the "LICENSE"). The License shall be exclusive except that
St. Xxxx xxx use the Licensed Marks for any and all purposes provided in
Schedule 1.1. St. Xxxx hereby reserves all other rights not expressly granted
hereunder.
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(1) This template shall be amended as necessary for each licensor of the St.
Xxxx trademarks and service marks in each jurisdiction.
ARTICLE II
OWNERSHIP OF THE LICENSED MARKS
SECTION 2.1 OWNERSHIP. Platinum agrees that, as between the parties, St.
Xxxx exclusively owns the Licensed Marks. Platinum also agrees that all of
Platinum's uses of the Licensed Marks, and all goodwill arising therefrom, shall
inure to the exclusive benefit of St. Xxxx. Platinum will not at any time do or
cause to be done any act or thing contesting or in any way impairing all or part
of such right, title and interest of St. Xxxx in and to the Licensed Marks.
Platinum shall not represent that it has any ownership interest in the Licensed
Marks or registrations, or applications for registration, thereof. Platinum
shall not register, file or maintain any registration or application for
registration of any trademark, service xxxx, Internet domain name, trade name or
other device that incorporates any of the Licensed Marks, or any marks
confusingly similar thereto, in any country, state, province or other location.
SECTION 2.2 ASSIGNMENT OF RIGHTS IN THE LICENSED MARKS. Platinum hereby
irrevocably assigns to St. Xxxx, for no additional consideration, any rights,
equity and goodwill in or relating to the Licensed Marks, which may, by
operation of law or otherwise, vest in Platinum during the term of this
Agreement. Platinum agrees to execute all documents and perform all acts
reasonably requested by St. Xxxx from time to time to effect, confirm and record
St. Paul's ownership of the Licensed Marks.
ARTICLE III
USE OF THE LICENSED MARKS
SECTION 3.1 COMPLIANCE REGARDING THE LICENSED MARKS. Platinum shall comply
with all applicable laws and regulations relating to the use of the Licensed
Marks and the goods and services in connection with which Platinum uses the
Licensed Marks, including without limitation any laws and regulations which
require Platinum to indicate that (i) Platinum is a licensee of the Licensed
Marks; (ii) St. Xxxx owns the Licensed Marks; and/or (iii) Platinum is the
source of the services provided or offered in connection with the Licensed
Marks. Platinum shall apply statutory notice of trademark registration, where
reasonably practicable.
SECTION 3.2 REPUTATION. Platinum shall not, by any act or omission,
tarnish, disparage, degrade, dilute or injure the reputation of the Licensed
Marks, or the goodwill associated with any of the foregoing.
ARTICLE IV
QUALITY CONTROL
SECTION 4.1 STANDARD OF QUALITY. Platinum acknowledges that the Licensed
Marks have established valuable goodwill and are well recognized in the minds of
the relevant classes of customers and trade. Platinum agrees that the nature and
quality of all services provided or offered by Platinum in connection with the
Licensed Marks as permitted hereunder
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shall materially equal or exceed the standard of quality maintained by St. Xxxx
immediately prior to the Closing Date (as defined in Section 5.1). Platinum
shall permit St. Xxxx reasonably prompt access to Platinum's facilities and
personnel on prior written notice as reasonably requested by St. Xxxx or
necessary for St. Xxxx to verify that Platinum is in compliance with the
immediately foregoing sentence. Platinum also shall from time to time upon St.
Paul's written request and at Platinum's cost make available to St. Xxxx for
inspection specimens demonstrating Platinum's use of the Licensed Marks and
other materials used in connection with the Licensed Marks.
ARTICLE V
TERM AND TERMINATION
SECTION 5.1 TERM. This Agreement shall commence as specified in Section
10.8 (the "CLOSING DATE") and shall terminate 1 year after the Closing Date,
unless terminated earlier in accordance with the provisions of this Agreement.
SECTION 5.2 EARLY TERMINATION. Platinum may terminate this Agreement at any
time on 30 days' written notice to St. Xxxx. St. Xxxx xxx terminate this
Agreement on 30 days' written notice to Platinum if Platinum does not cure its
material breach of this Agreement within 30 days of St. Xxxx providing to
Platinum a written notice of such breach specifying its nature in reasonable
detail.
SECTION 5.3 EFFECT OF TERMINATION. Upon termination of this Agreement,
Platinum shall immediately cease using the Licensed Marks (including without
limitation corporate names, telephone listings and other public or commercial
appearances of the Licensed Marks). The following provisions of this Agreement
shall survive termination thereof: Articles II, IX and X and Sections 3.2, 5.3
and 6.2(iii). Termination of this Agreement for any reason shall not affect
those obligations which have accrued as of the date of termination.
ARTICLE VI
ASSIGNMENT AND SUBLICENSING
SECTION 6.1 ASSIGNMENT. This Agreement and the rights and obligations
hereunder may be assigned or otherwise transferred by St. Xxxx in its sole
discretion in connection with the corresponding assignment of the Licensed
Marks. This Agreement and the rights and obligations hereunder shall not be
assigned or otherwise transferred (by operation of law or otherwise) by Platinum
without St. Paul's prior written consent, which consent shall not be
unreasonably withheld or delayed. Any purported transfer of this Agreement in
violation of this Agreement shall be void. This Agreement shall be binding on
St. Xxxx, Platinum, and their respective permitted successors.
SECTION 6.2 SUBLICENSING. Notwithstanding the non-sublicensable nature of
this License as provided in Section 1.1 hereof, Platinum shall be free to
sublicense to any of its Post-Closing Subsidiaries (as defined in the Formation
and Separation Agreement) any of its rights in the Licensed Marks (but only for
such time as they are Post-Closing Subsidiaries),
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provided that: (i) Platinum shall impose on such sublicensee agreements with
respect to the Licensed Marks that are no less stringent or complete than those
required of Platinum hereunder, (ii) St. Xxxx shall be expressly named as a
third party beneficiary of the sublicensee's agreements thereunder with direct
rights of enforcement of such agreements; and (iii) upon any termination of this
Agreement, any sublicense granted by Platinum shall terminate immediately and
automatically and all uses of the Licensed Marks by the sublicensee shall cease
as described in Section 5.3 hereof.
ARTICLE VII
THIRD PARTY VIOLATION OF THE LICENSED MARKS
SECTION 7.1 THIRD PARTY VIOLATION. Platinum shall promptly notify St. Xxxx
in writing of any violation by a third party of the Licensed Marks which may
come to Platinum's attention. St. Xxxx shall determine in its sole discretion
whether or not any action shall be taken with respect to such alleged violation,
and the nature of the action to be taken; unless the parties otherwise agree.
Platinum agrees to cooperate with St. Xxxx in this regard as reasonably
requested, all at St. Paul's expense. Any recovery obtained by St. Xxxx as a
result of any such action brought under this Section 7.1 shall belong entirely
to St. Xxxx.
SECTION 7.2 THIRD PARTY ACTION REGARDING THE LICENSED MARKS. In the event
that a third party commences an action against Platinum as a result of its use
of the Licensed Marks, Platinum shall promptly notify St. Xxxx in writing of
such action. St. Xxxx shall defend against any such action at St. Paul's
expense, and Platinum shall cooperate in such defense as reasonably requested by
St. Xxxx, all at St. Paul's expense.
ARTICLE VIII
WARRANTY AND WARRANTY DISCLAIMER
SECTION 8.1 LIMITED WARRANTY. St. Xxxx represents and warrants that it owns
the Licensed Marks which are the subject of issued registrations identified on
SCHEDULE A attached hereto. Except as otherwise expressly stated herein, St.
Xxxx disclaims all representations and warranties concerning the Licensed Marks,
including without limitation warranties of title, merchantability,
non-infringement and fitness for a particular purpose.
ARTICLE IX
INDEMNIFICATION
SECTION 9.1 INDEMNIFICATION OF ST. XXXX. Platinum shall defend, indemnify
and hold harmless St. Xxxx, its Post-closing Subsidiaries (as defined in the
Formation and Separation Agreement) and their respective officers, directors and
agents from and against any third party losses, liabilities, claims, damages,
obligations, payments, costs and expenses, including, but not limited to, any
amounts paid in settlement thereof and reasonable attorney fees (collectively,
"CLAIMS") arising out of or based upon Platinum's material breach of this
Agreement except to
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the extent that such Claims were caused directly or indirectly by acts or
omissions of St. Xxxx, its Post-closing Subsidiaries or any person acting on
behalf of St. Xxxx or any of its Post-closing Subsidiaries.
SECTION 9.2 INDEMNIFICATION OF PLATINUM. St. Xxxx shall defend, indemnify
and hold harmless Platinum, its Post-closing Subsidiaries (as defined in the
Formation and Separation Agreement) and their respective officers, directors and
agents from and against any third party Claims arising out of or based upon St.
Paul's material breach of this Agreement except to the extent that such Claims
were caused directly or indirectly by acts or omissions of Platinum, its
Post-closing Subsidiaries or any person acting on behalf of Platinum or any of
its Post-closing Subsidiaries.
SECTION 9.3 INDEMNIFICATION PROCEDURE. Each party shall (i) give the other
prompt notice of any Claim for which indemnification is sought; (ii) provide the
indemnifying party with complete control over the defense and settlement of such
Claim; and (iii) provide all reasonable assistance in connection with the
defense of such Claim. The amount which either party to this Agreement is or may
be required to pay to the other party pursuant to Sections 9.1 and 9.2 shall be
reduced by any insurance proceeds or any other amounts actually recovered by or
on behalf of such indemnified party, in reduction of the related Claim. Neither
party shall be entitled to indemnification for Claims to the extent attributable
to such party's gross negligence, bad faith or willful misconduct.
SECTION 9.4 SOLE REMEDY. The indemnification provisions set forth in this
Article IX are the sole and exclusive remedy of the parties hereto for any and
all claims for indemnification under this Agreement.
ARTICLE X
MISCELLANEOUS
SECTION 10.1 ENTIRE AGREEMENT. This Agreement and the Formation and
Separation Agreement constitute the entire agreement and understanding between
the parties hereto, whether oral or written, with regard to the subject matter
hereof, and no party shall be liable or bound to any other party in any manner
by any representations, warranties, covenants and agreements except as
specifically set forth herein. In the event of a conflict between this Agreement
and the other Ancillary Agreements (as defined in the Formation and Separation
Agreement) concerning the subject matter thereof, the terms of this Agreement
shall govern.
SECTION 10.2 AMENDMENT OR MODIFICATION; WAIVER. This Agreement may be
amended or modified only by written instrument signed by the parties hereto.
Any term or condition of this Agreement may be waived at any time by the
party that is entitled to the benefit thereof, provided that such waiver is
in writing and executed by a duly authorized officer of such party. A waiver
on one occasion will not be deemed to be a waiver of the same or any other
breach or nonfulfillment on a future occasion unless the waiver explicitly
provides for such effect. All remedies, either under this Agreement, or by
law or otherwise afforded, will be cumulative and not alternative.
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SECTION 10.3 SEVERABILITY. In case any one or more of the provisions
contained herein shall, for any reason, be held to be invalid, illegal or
unenforceable in any respect, such provision or provisions shall be ineffective
only to the extent of such invalidity, illegality or unenforceability, without
invalidating the remainder of such provision or provisions or the remaining
provisions of this Agreement, and this Agreement shall be construed as if such
invalid, illegal or unenforceable provision or provisions had never been
contained herein, unless such a construction would be unreasonable.
SECTION 10.4 GOVERNING LAW; DISPUTE RESOLUTION.
(a) GOVERNING LAW. This Agreement shall be governed by and construed and
enforced in accordance with the laws of the State of New York applicable to
agreements made and performed entirely therein,
(b) MANDATORY ARBITRATION. The parties hereto shall promptly submit any
dispute, claim, or controversy arising out of or relating to this Agreement
and/or the provision of services hereunder, including, effect, validity, breach,
interpretation, performance, or enforcement (collectively, a "DISPUTE") to
binding arbitration in New York, New York at the offices of Judicial Arbitration
and Mediation Services, Inc. before a panel of three arbitrators (the
"ARBITRATORS") in accordance with the Streamlined Arbitration Rules and
Procedures of Judicial Arbitration and Mediation Services, Inc. The parties
agree that, except as otherwise provided herein respecting temporary or
preliminary injunctive relief, binding arbitration shall be the sole means of
resolving any Dispute.
(c) COSTS. The costs of the arbitration proceeding and any proceeding in
court to confirm or to vacate any arbitration award or to obtain temporary or
preliminary injunctive relief as provided in paragraph (d) below, as applicable
(including, without limitation, actual attorneys' fees and costs), shall be
borne by the unsuccessful party and shall be awarded as part of the Arbitrators'
decision, unless the Arbitrators shall otherwise allocate such costs in such
decision.
(d) INJUNCTIVE RELIEF. This Section 10.4 shall not prevent the parties
hereto from seeking or obtaining, and St. Xxxx shall be entitled to, temporary
or preliminary injunctive relief in a court for any breach or threatened breach
of any provision hereof, [or for any violation of St. Paul's trademark rights by
Platinum,] pending the hearing before and determination of the Arbitrators. The
parties hereby agree that they shall continue to perform under this Agreement
pending the hearing before and determination of the Arbitrators, it being agreed
and understood that the failure to so perform will cause irreparable harm to the
parties and that the putative breaching party has assumed all of the commercial
risks associated with such breach or threatened breach of any provision hereof
by such party.
SECTION 10.5 DESCRIPTIVE HEADINGS; CONSTRUCTION. The descriptive headings
herein are inserted for convenience of reference only and are not part of, and
do not affect the meaning, construction or interpretation of, this Agreement.
Unless otherwise expressly provided, the word "including" does not limit the
preceding words or terms.
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SECTION 10.6 COUNTERPARTS. For the convenience of the parties hereto, this
Agreement may be executed in any number of counterparts, each such counterpart
being deemed to be an original instrument, and all such counterparts shall
together constitute the same agreement.
SECTION 10.7 NO PARTNERSHIP. This Agreement and the relationship between
the parties established under this Agreement do not constitute a partnership,
joint venture or any form of fiduciary relationship or contract of employment
between the parties. Each of the parties hereto is an independent contractor and
not an agent of the other party.
SECTION 10.8 EFFECTIVENESS. This Agreement shall become effective
contingent upon the consummation of the Public Offering (as defined in the
Formation and Separation Agreement), without any further action by either of the
parties hereto.
SECTION 10.9 DEFINITIONS; FORMATION AND SEPARATION AGREEMENT. Capitalized
terms used but not defined in this Agreement have the meanings specified in the
Formation and Separation Agreement.
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IN WITNESS WHEREOF, each of the parties has caused a duly authorized
representative to execute this Agreement on its behalf.
THE ST. XXXX COMPANIES, INC.
By: __________________________
Name:
Title:
PLATINUM UNDERWRITERS HOLDINGS, LTD.
By: __________________________
Name:
Title:
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